Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Maksim Galkin
Claim Number: FA0602000649293
Complainants are Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively “Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX, 75225. Respondent is Maksim Galkin (“Respondent”), Danilevskogo 18, apt. 1025, Kharkov, Kharkov 61000, Ukraine.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hpprintersworld.com>, registered with Onlinenic, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 20, 2006; the National Arbitration Forum received a hard copy of the Complaint February 22, 2006.
On February 20, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <hpprintersworld.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@hpprintersworld.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <hpprintersworld.com>, is confusingly similar to Complainant’s HP WORLD mark.
2. Respondent has no rights to or legitimate interests in the <hpprintersworld.com> domain name.
3. Respondent registered and used the <hpprintersworld.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures and markets computer hardware, printers, peripherals, software, and other related goods and services. In connection with these products and services, Complainant has numerous trademark registrations worldwide, including the HP WORLD mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,339,761 issued September 7, 1999).
Respondent registered the <hpprintersworld.com> domain name January 22, 2006. Respondent’s disputed domain name resolves to a website featuring Complainant’s mark and information about Complainant’s products in addition to providing links to various competing commercial websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant established using extrinsic proof in this
proceeding that it has legal rights in the HP WORLD mark through registration
with the USPTO. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
Complainant contends that the domain name that Respondent registered, <hpprintersworld.com>, is confusingly similar to Complainant’s mark. The disputed domain name features Complainant’s entire HP WORLD mark and inserts the term “printers” in the middle of the mark. It is a well-established principle that the addition of generic terms to an otherwise identical mark fails to distinguish domain names from trademarks. As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no rights to or legitimate interests Complainant’s mark or the domain name, <hpprintersworld.com>, containing Complainant’s mark. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond to the Complaint presents a rebuttable presumption that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel chooses to consider whether the evidence supports
rights or legitimate interests under Policy ¶ 4(c). Complainant contends that Respondent is using the confusingly
similar <hpprintersworld.com> domain name to operate a website
that features links to various unrelated commercial websites from which
Respondent presumably receives referral fees.
The Panel finds that such use for Respondent’s own commercial gain is
not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate non-commercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Moreover, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s HP WORLD mark. As such, the Panel finds that in the absence of evidence to suggest otherwise, Respondent is not commonly known by the <hpprintersworld.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). No evidence exists in this record and Respondent has not come forward to suggest any proof to establish that Respondent is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Finally, Complainant contends that Respondent’s use of the
disputed domain name and it’s prominent display of Complainant’s mark on the
resulting website is evidence of bad faith registration and use. The Panel finds that such use is likely to
cause confusion as to Complainant’s sponsorship of and affiliation with
Respondent’s website. As a result,
Respondent’s intent to deceive Internet users for commercial gain is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec.
22, 2003) (“Registration and use of a domain name that incorporates another's
mark with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably commercially
benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpprintersworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 4, 2006
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